VMware, Inc.

Patent Trials and Appeals Board

May 14, 2021

2020000612 (P.T.A.B. May. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/178,324 06/09/2016 Fei Huang C493 3203
136237 7590 05/14/2021
Barta, Jones & Foley, P.C.
(Patent Group - VMware)
3308 Preston Road
#350-161
Plano, TX 75093
EXAMINER
GHAFFARI, ABU Z
ART UNIT PAPER NUMBER
2195
NOTIFICATION DATE DELIVERY MODE
05/14/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@bjfip.com
ipadmin@vmware.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FEI HUANG and DANIEL JAMES BEVERIDGE
Appeal 2020-000612
Application 15/178,324
Technology Center 2100
Before MICHAEL J. STRAUSS, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies VMware, Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2020-000612
Application 15/178,324

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TECHNOLOGY
The application relates to “application virtualization” and “searching a
look-aside cache” for a requested file. Spec. ¶ 3.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A computing system for conserving space for application
virtualization, the computing system comprising:
a database that maps associations between a plurality of
applications and their respective files on a host, the plurality of
applications including a first application and a second
application; and
an application virtualization engine that:
receives a notification that an application
installation event of the first application on the host is
occurring;
records files from the application installation event;
indexes the recorded files in the database to map the
associations; and
subsequently, during an application installing event
of the second application on the host:
intercepts a request to install a file from the
application installing event of the second
application;
searches the database for the file;
upon determining that the file has been
indexed in the database from the application
installing event of the first application, adjusts a
filter to make the file available to the second
application while maintaining only one copy of the
file on the host.
Appeal 2020-000612
Application 15/178,324

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REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Beretta US 2010/0313079 A1 Dec. 9, 2010
TeNgaio US 9,100,246 B1 Aug. 4, 2015
REJECTION ON APPEAL
Claims 1–20 are rejected under 35 U.S.C. § 103(a) as obvious over
TeNgaio and Beretta. Final Act. 4.
Although the briefs in this appeal do not address it, we note that
claims 1–20 also are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Final Act. 3. Because we affirm the § 103 rejection, we
need not address the § 112 rejection. However, in the event of further
prosecution, Appellant and the Examiner may wish to address that claim 1
recites “an application installation event for the first application” and “an
application installing event for the second application,” thereby potentially
creating uncertainty about the antecedent basis for the later recitation of “the
application installing event of the first application.”
ISSUES
1. Did the Examiner err in finding the combination of TeNgaio
and Beretta teaches or suggests the claimed steps during an application
installing event of the second application, as recited in claim 1?
2. Did the Examiner err in combining TeNgaio and Beretta
because the Examiner’s combination relies on hindsight or would render
either reference inoperable for its intended purpose?
Appeal 2020-000612
Application 15/178,324

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ANALYSIS
Issue 1
Appellant argues that none of TeNgaio, Beretta, or their combination
teaches the limitations in claim 1 of “during an application installing event
of the second application on the host: intercepts a request to install a file
from the application installing event of the second application” and “upon
determining that the file has been indexed in the database from the
application installing event of the first application, adjusts a filter to make
the file available to the second application while maintaining only one copy
of the file on the host.” Appeal Br. 12–15.
According to Appellant, “TeNgaio is directed to handling access
requests related to virtually installed software that is activated and . . .
deactivated.” Appeal Br. 11. Thus, Appellant argues, “TeNgaio describes
intercepting a request to access a particular file object or information from a
memory location,” but not “intercepting a request to install a file from an
application install event as provided in Claim 1.” Id. at 13.
However, the Examiner correctly points out that TeNgaio discloses,
“the term ‘virtualization’ refers to performance of one or more operations to
virtually install software, including applications and data related to the
software.” TeNgaio 3:22–36; Ans. 8–9. The Examiner further determines
that TeNgaio discloses “importing a distributed application layer” as shown
in Figure 7, which the Examiner equates with an application installing event.
TeNgaio 19:47–64; Ans. 8–9. “Upon identifying an import request or
notification in block 720, the process 700 determines whether items to be
imported already exist . . . such that the import operation may merely
activate . . . existing information . . . .” TeNgaio 19:59–64. Thus, contrary
Appeal 2020-000612
Application 15/178,324

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to Appellant’s arguments, TeNgaio discloses virtually installing software
and checking if a file to be imported already exists.
According to Appellant, “Beretta is directed to building a compiled
code for a compilation request received from an application.” Appeal Br.
12. Thus, Appellant argues, “Beretta is directed to using a single copy of
data based on a compilation request and not an installing event.” Id. at 13.
However, the Examiner determines that “compiling” and “linking” are “all
example[s] of [an] installation event.” Ans. 15. We further note that the
Examiner also relies on TeNgaio for teaching or suggesting installation
events, as discussed above.
Issue 2
Appellant also argues that “the combination would render both
TeNgaio and Beretta inoperable for their intended purpose as these are
totally different processes that cannot be combined.” Appeal Br. 15. This is
not persuasive, however, because as discussed above the Examiner
determines that it would have been obvious to a person of ordinary skill in
the art that compilation is one example of an installation event (e.g.,
Beretta’s compilation can occur during TeNgaio’s installation).
Appellant further argues that “the Examiner is improperly picking and
choosing various elements from Claim 1 by using improper hindsight, and
ignoring how the elements in Claim 1 actually interact,” specifically “the
correlation between maintaining only one copy of the file on the host and
determining that the file has been indexed in the database from the
application installing event of the first application.” Appeal Br. 16; see also
Reply Br. 4.
Appeal 2020-000612
Application 15/178,324

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We are not persuaded by Appellant’s arguments against the
combination of TeNgaio and Beretta. The Examiner provides reasoning for
the combination, including that both TeNgaio and Beretta are motivated to
reduce memory usage. Ans. 19. This reasoning is supported by the
references themselves, which discuss the problems of conventional
approaches including excessive memory usage and not sharing. E.g.,
Beretta ¶¶ 3–4; TeNgaio 1:43–61. Appellant’s conclusory assertions of
hindsight fail to address sufficiently the reasoning set forth by the Examiner.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–20, which Appellant argues are patentable for similar reasons. See
Appeal Br. 17; 37 C.F.R. § 41.37(c)(1)(iv).
OUTCOME
The following table summarizes the outcome of the rejection:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103(a) TeNgaio, Beretta 1–20
TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED